A German individual named Andreas Schmidt filed an Alternative Dispute Resolution case (ADR) against the domain Schmidt.eu; he alleged that the domain has been dormant since its registration in 2006.
In the process, it was unveiled that the Respondent was mis-targeted as they are only the administrators of the domain. The registrant is in fact a Swiss company, Aebi Schmidt, formed in 1920, well before the Complainant’s own birth in 1983.
The case was won by the Respondent, who eventually pointed the domain to their corporate web site. It’s sad news for Mr. Andreas Schmidt who will have to find another domain for his personal use.
“According to the Arbitration Commission, the complainant has not presented any evidence in this case that the respondent registered the disputed domain name in 2006 in order to prevent him – the complainant – from using his real name as a domain name. This is rather far-fetched for the arbitration commission, since the respondent has actually proven by submitting an invoice that it registered the disputed domain name on behalf of and for the owner of the corresponding trademark rights, SCHMIDT.”
Translation from German follows:
The domain transfer was denied.
ARBITRATION AND MEDIATION CENTER – DECISION OF THE ARBITRATION COMMISSION
Andreas Schmidt v. PROLINK Internet communications GmbH
Procedure no. DEU2023-00331. The parties
The complainant is Andreas Schmidt, Germany, represented by Weininger and Partner mbB, Germany.
The respondent is PROLINK Internet communications GmbH, represented by Heisel Patente Marken Designs, Switzerland.
2. Domain name, register and registrar
The registry of the disputed domain name schmidt.eu is the European Registry for Internet Domains (“EURid” or the “Register”). The disputed domain name is registered with Domain Robot.
3. Procedure
The Complainant filed her complaint with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2023.
On August 11, 2023, the Center emailed the Registry a request for confirmation of registration details regarding the disputed domain name. On August 13, 2023, the Register sent its response via email to the Center, in which it confirmed that (only) the respondent, PROLINK Internet communications GmbH, is the owner of the disputed domain name and provided its contact details.
The Center found that the complaint complies with the formal requirements of the Rules for Alternative Dispute Resolution in .eu Domain Name Disputes (the “ADR Rules”) and the Supplementary Rules of the World Intellectual Property Organization for .eu Domain Name Disputes (the “Supplementary Rules”) ) corresponds.
In accordance with the ADR Rules, Paragraph B(2), the Center formally communicated the complaint to the respondent PROLINK Internet communications GmbH and initiated the procedure on August 16, 2023. Gema. According to the ADR Rules, Paragraph B(3), the deadline for responding to the complaint was September 5, 2023.
In a simple email to the center on August 17, 2023, the respondent PROLINK Internet communications GmbH pointed out, providing a series of screenshots, that she could not open the PDF document with the complaint and that she was only the trustee for the disputed domain name the respondent is Aebi Schmidt Holding AG.On August 18, 2023, the center informed the respondent PROLINK Internet communications GmbH that the response of August 17, 2023 was formally deficient and referred to the templates for a response to the complaint available online. In order to remedy this formal deficiency, the center set a deadline of August 25, 2023. The center extended this deadline at the request of the respondent PROLINK Internet communications GmbH on August 22, 2023 as requested. until August 31, 2023. On this date, the respondent gave notice to PROLINK Internet communications GmbH. a response from Aebi Schmidt Holding AG.
On August 30, 2023, the respondent PROLINK Internet communications GmbH and Aebi Schmidt Holding AG submitted a response to the complaint to the center through their joint legal representatives.
The Center appointed Tobias Malte Muller as a single-member arbitration commission on September 5, 2023. The arbitration commission finds that it has acted properly. was appointed. The Arbitration Commission has made a declaration of acceptance and declaration of independence as required by the Center for compliance with the ADR Rules, Paragraph B(5).
4. Facts
This decision is based on the complaint of Mr. Andreas Schmidt against the registration of the domain name schmidt.eu by the respondent PROLINK Internet communications GmbH.
The complainant has proven by submitting a copy of his identity card that his real name is Andreas Schmidt, that he was born in 1983 and that he resides in Germany.
According to the confirmation sent by EURid, the respondent, PROLINK Internet communications GmbH, is the registered owner of the disputed domain name and registered it on May 2, 2006. The language of the registration agreement is German.
Furthermore, the evidence available to the arbitration commission shows that no content is available on the website linked to the disputed domain name.
5. Party submissions
A. Complainant
First, the complainant is of the opinion that his surname SCHMIDT is identical to the disputed domain name.
Secondly, the complainant believes that the respondent’s rights or legitimate interests in the disputed domain name are not apparent. The respondent did not use the disputed domain name in connection with the offer of goods or services and did not make any preparations for such use. Furthermore, the respondent is a limited liability company, which is below it is not generally known for the domain name in question. Ultimately, the disputed domain name is not linked to any website with any content.
Thirdly, the complainant is of the opinion that there are indications that the respondent is using the disputed domain name with malicious intent. According to the excerpts from its website provided, the respondent sells and rents domain names. Since she does not use the disputed domain name, it is reasonable to assume that she only registered this domain name in order to sell or rent it. In addition, as shown by two screenshots (from December 19, 2020 and December 24, 2021), which were accessed via the archive website “archive.org”, the domain name in question has not been used in any relevant way for more than two years.
B. Respondent
The respondent states that the complaint should not only be directed against the respondent PROLINK Internet Communication GmbH, but also against Aebi Schmidt Holding AG, a company based in Switzerland. The latter is the owner of the disputed domain name. The respondent, PROLINK Internet communications GmbH, only acts as the administrator (registrar) for the disputed domain name and manages it (host). Submitting a current invoice, Aebi Schmidt Holding AG claims that it commissioned the respondent PROLINK Internet Communication GmbH to register the disputed domain name.
In terms of content, the respondent initially claims that Aebi Schmidt Holding AG is the owner of a company name right and registered trademarks SCHMIDT, which are older than the complainant’s name rights. For this purpose, on the one hand, it provides information on various trademarks that contain or consist of the word element SCHMIDT and are registered on them, including a German word/image trademark No. 939017, registered on December 16, 1975 for goods in classes 7, 8, 12, 21, the proper. has been extended and is in force. On the other hand, it provides an extract from the commercial register of Ing. Alfred Schmidt GmbH (which changed its name to Schmidt Holding Europe GmbH in 1993 and to Schmidt Holding GmbH in 1998). According to this extract, this company was originally entered in the commercial register on January 12, 1971. Furthermore, it is said to have been founded in 1920 and is now part of the Aebi Schmidt Group and therefore Aebi Schmidt Holding AG.
Furthermore, the respondent bears the same meaning. claims that it has rights or legitimate interests in the disputed domain name. She claims that preparations have already been made to advertise and offer products under the SCHMIDT brand across the EU under this domain name in the future, which were currently still offered under the Aebi-Schmidt umbrella brand. It further claims that Schmidt is a very well-known brand in the winter service sector with a market share of around 30% for winter service vehicles in Europe.
Finally, the respondent essentially claims that the disputed domain name was not registered or used with malicious intent. The complainant and Aebi Schmidt Holding AG operate in completely different sectors, so there is no unfair competitive behavior. There is still a legal connection between the company name and the disputed domain name with regard to Aebi Schmidt Holding AG, because the latter continues to label its products with SCHMIDT. In addition, the respondent PROLINK Internet Communication GmbH linked the disputed domain name to the registration by depositing the name server on “www.aebi-schmidt.com/de”. The domain name in question was linked to content in this way until the end of 2020. Due to organizational fault, the link then did not work correctly; This has now been corrected after the complaint was submitted.
6. Reasons for the decision
Gema. Paragraph B(1)(a) of the ADR Rules allows anyone to initiate alternative dispute resolution proceedings against a domain owner. In order to succeed in his complaint, the complainant must demonstrate the requirements set out in paragraph B(11)(d)(1) of the ADR Rules, namely:
(i) that the domain name is identical or likely to be confused with a name which has rights recognized or established under the national law of a Member State and/or EU law, and,either
(ii) the domain name is registered by the respondent without any rights or legitimate interests in the same, or
(iii) the domain name has been registered or is being used in bad faith.
A. Procedural matters
(1) The only respondent in this procedure is PROLINK Internet communications GmbH, against whom the complaint is rightly directed.
In addition to this respondent, the second respondent in the reply dated August 30, 2023 is Aebi Schmidt Holding AG, which is based in Switzerland, as it is the owner of the domain name in dispute. However, in the opinion of the arbitration commission, such an expansion of the complaint on the part of the respondent is unfounded:
Gema. According to paragraph B(1)(a) of the ADR rules, the complaint can be filed either against the domain owner or against the registry. The latter alternative is not relevant in the present case since the complaint is not directed against the register. If, as in the present case, the complaint is filed against the domain owner, the correct respondent is “the owner of a registration for a .eu domain name (or the legal heirs of the owner …)”, cf. the definition of “respondent” in paragraph A(1) of the ADR Rules.
The relevant information about the owner or owners (registrant) of the disputed domain name comes from the WhoIs database, which manages the register with due care (see Article 12 of Implementing Regulation (EU) 2020/857, see also NVIDIA Corporation, NVIDIA GmbH v. Anthony Beltran, 101domain DAS Limited, WIPO Case No. DEU2021-0024). According to the information submitted by the register for the file, only the respondent, PROLINK Internet communications GmbH, is registered as the owner (registrant) of the disputed domain name. Contrary to what is claimed in the response to the complaint, according to the documents available to the arbitration commission, Aebi Schmidt Holding AG is not recorded in the WhoIs database as the owner or co-owner of the disputed domain name.
The screenshot from the domain management system of the respondent PROLINK Internet communications GmbH, which it presented in an email dated August 17, 2023, also shows only it – and not Aebi Schmidt Holding AG – as the “OWNER”, i.e. domain owner, out of.
The following control consideration finally confirms that Aebi Schmidt Holding AG cannot be the domain owner and therefore cannot be a respondent: According to. Paragraph 3(a)(iii) of the General Terms and Conditions for .eu, … and .ευ Domains (“General Terms and Conditions”), a domain owner is obliged during the term of the .eu domain registration to comply with all applicable rules and the Meet registration requirements. For companies, this means in particular having a headquarters in the European Union, Iceland, Liechtenstein or Norway. Since Aebi Schmidt Holding AG, according to its own statement, is based in Switzerland, it does not meet this requirement.
Based on these facts, the arbitration commission decides that Aebi Schmidt Holding AG is not a respondent in these proceedings. Rather, the proceedings will continue against PROLINK Internet communications GmbH as the sole respondent.
(2) To clarify, the Arbitration Commission points out that the response to the complaint dated August 30, 2023, including the evidence submitted as annexes, must be taken into account when making its decision. This response to the complaint was at least also submitted in the name of the respondent, PROLINK Internet communications GmbH.
B. Identical or confusing with a name which has rights recognized or established under the national law of a Member State and/or EU law
First, the complainant must establish that the disputed domain name is identical or likely to be confused with a name to which rights exist that are recognized or established under the national law of a Member State and/or EU law, paragraph B(11)(d)(1). )(i) of the ADR Rules. Article 9(2) of Implementing Regulation (EU) 2020/857 and paragraph B(1)(b)(9) of the ADR Rules in principle mention the surname as such a right within the meaning of paragraph B(11)(d)(1). )(i) of the ADR Rules.
In this case, the complainant has proven by means of a copy of his ID that he bears the surname SCHMIDT. This has remained undisputed. Furthermore, he rightly pointed out that the family name according to Section 12 of the German Civil Code is fundamentally protected.
The disputed domain name is identical to this surname SCHMIDT, which is protected under Section 12 of the German Civil Code. The top-level domain “.eu” is a necessary part of a “.eu” domain name. According to general opinion, it does not have any identity-excluding effect.
The arbitration commission thus determines that the first element of the offense according to Paragraph B(11)(d)(1)(i) of the ADR Rules is fulfilled.
C. Rights or legitimate interests in the disputed domain name
Secondly, it must be checked whether the respondent is using the disputed domain name without any rights or legitimate interests in it has registered the same, paragraph B(11)(d)(1)(iii) of the ADR Rules. The complainant claims that the respondent has no rights or legitimate interests in the disputed domain name. Paragraph B(11)(e) of the ADR Rules specifies the circumstances that are capable of proving the respondent’s rights or legitimate interests in the domain name using a catalog of three regulatory examples. As shown by the wording of this standard (“…but not exclusively…”), this catalog is not exhaustive.
(1) The Arbitration Commission initially agrees with the complainant that none of these regulatory examples are fulfilled: neither has the respondent provided evidence that, prior to the announcement of the dispute, it had made preparations for use within the meaning of paragraph B(11)(e)( 1) the ADR rules have been made, the arbitration commission still has evidence that the respondent PROLINK Internet communications GmbH was generally known under the domain name (paragraph B(11)(e)(2) of the ADR rules), nor did the respondent make any such claims any use of the domain name at the time of the complaint (paragraph B(11)(e)(3) of the ADR Rules).
(2) However, as stated above, the examples of regulations mentioned in paragraph B(11)(e) of the ADR Rules are not exhaustive. Rather, this standard basically allows proof that the right or legitimate interest also exists for other reasons. In the present case, the Arbitration Commission is of the opinion that the respondent has such a right or legitimate interest in the domain name for reasons other than those mentioned in the regulatory examples. The respondent, PROLINK Internet communications GmbH, stated and demonstrated on the basis of an invoice that it had registered the disputed domain name on behalf of Aebi Schmidt Holding AG. Furthermore, it demonstrated by submitting trademark extracts that Aebi Schmidt Holding AG is the owner of registered trademarks for the sign SCHMIDT, which has priority age than the complainant’s real name. In fact, according to the Arbitration Commission, it cannot make any difference from a legal point of view whether the person who has a right or legal interest uses an intermediary service provider when registering the domain. Finally, the respondent submitted that the domain was actually used in connection with the offer of goods or services under the SCHMIDT mark until the end of 2020. This is also consistent with the two screenshots submitted by the complainant, according to which no content about the disputed domain name was available on December 19, 2020 and December 24, 2021.
Furthermore, the Arbitration Commission notes that in accordance with Paragraph 3(a)(iii) of the General Terms and Conditions means that a company based in Switzerland is generally not entitled to register a .eu domain name. Paragraph 3(b) of the General Terms and Conditions also states: “Your registration data must be your own data and must not be that of your registrar, or an authorized representative or a representative of a natural or legal person who does not meet the registration requirements Fulfills”. However, the arbitration commission finds that a possible violation. against the General Terms and Conditions cannot be asserted in an ADR procedure against the domain owner under the scope of application of the ADR rules.
The Arbitration Commission thus finds that the complainant has not fulfilled the requirements of paragraph B(11)(d)(1)(ii) of the ADR Rules.
D. Bad faith registration or use
Thirdly, it must be examined whether the respondent has registered or is using the disputed domain name in bad faith, paragraph B(11)(d)(1)(iii) of the ADR Rules. Paragraph B(11)(f) of the ADR rules specifies the circumstances that are likely to prove the fraudulent registration or use of a domain name using a – again non-exhaustive – catalog of five regulatory examples.
(1) Regulatory Example Paragraph B(11)(f)(2)(ii) of the ADR Rules states: “Circumstances indicating that the domain name was registered or acquired primarily for the purpose of passing it on to the owner of a name, for a right recognized or established under national and/or EU law, or to sell, rent or otherwise transfer to a public body. Meaning. the complainant refers to this when he states that the fact that the disputed domain name is not used suggests that the respondent only registered this domain name in order to sell or rent it.
The Arbitration Commission is of the opinion that the complainant has not succeeded in providing evidence that this regulatory example is actually fulfilled. The respondent initially countered this claim with substance and, by submitting an invoice, proved that it had registered and held the disputed domain name on behalf of and for Aebi Schmidt Holding AG. The complainant has not provided any evidence or objective evidence to support the assumption that the respondent only registered the disputed domain name in order to sell or rent it. The time element also speaks against such a presumption: the respondent registered the domain name in 2006 and neither sold nor rented it in these 17 years.
(2) Regulatory example Paragraph B(11)(f)(2)(ii) of the ADR Rules reads: “…the domain name has been registered to prevent the owner of a name for which a national and/or EU -Law recognized or established law exists, or a public institution uses this name
used as a corresponding domain name, provided: … the domain name has not been used in a relevant manner for at least two years from the date of registration”. Meaning. the complainant refers to this when he submits, using two screenshots (from December 19, 2020 and December 24, 2021, accessed via “archive.org”), that the domain name in question has not been used in a relevant manner for more than two years.
In fact, the respondent admits that the domain name in question was linked to “www.aebi-schmidt.com/de” in the past through the name server, but that it has been in use since the end of 2020 (until the period after the complaint was served ) but in any case was no longer linked to content. This is also consistent with the two screenshots submitted by the complainant, according to which no content about the disputed domain name was available on December 19, 2020 and December 24, 2021. It is therefore clear to the arbitration commission that the domain name in question was not used at all between the end of 2020 and August 2023, i.e. around two and a half years.However, the Arbitration Commission notes that paragraph B(11)(f)(2)(iii) of the ADR Rules (11)(f)(2) has two elements: According to In the first half of the sentence, in addition to the objective two-year non-use, there is also the subjective element, namely the intention (“…in order to…”) to prevent the owner of a name for which there is a right recognized or established under national and/or EU law , or a public institution uses this name as the corresponding domain name. According to the Arbitration Commission, the complainant has not presented any evidence in this case that the respondent registered the disputed domain name in 2006 in order to prevent him – the complainant – from using his real name as a domain name. This is rather far-fetched for the arbitration commission, since the respondent has actually proven by submitting an invoice that it registered the disputed domain name on behalf of and for the owner of the corresponding trademark rights, SCHMIDT.
The Arbitration Commission thus finds that the complainant has not fulfilled the requirements of paragraph B(11)(d)(1)(iii) of the ADR Rules.
7. Decision
For the aforementioned reasons, the complaint is dismissed.
Tobias Malte Muller
Tobias Malte Muller
single-headed arbitration committee
Date: October 13, 2023
